What should IT businesses know about trademark registration with examples?

Why register a trademark in the IT industry?

A registered trademark helps prevent others from stealing your brand and investing in product advertising, but only after TM registration is advisable and reliable. Having a TM certificate allows you to successfully block unauthorized advertisements of your product on social media and marketplaces by sellers who do not have permission to promote it.

For developers, a registered TM prevents their app from being blocked in the App Store or Google Play for intellectual property rights violations. It also allows them to block apps from other developers unfairly using their name or logo. A .ua domain name can only be purchased after obtaining a TM certificate.

Securing investments for an IT specialist is often more accessible with a registered TM, as it increases investors’ trust in the product and indicates that the goal of attracting investments is the further development and scaling of the business, not just receiving funds. After filing a TM application, you can object to registering similar brands. Once you have a certificate, you can formally defend your rights to the brand in court.

A registered TM guarantees brand protection for 10 years. This protection can be indefinite if the 10-year periods are renewed on time. To inform about a TM application, you can use the ™ symbol in the upper right corner of the brand. If the TM is registered, the ® symbol indicates exclusive rights to use a specific word or image.

Class selection and search

For TM registration, you need to carefully select the classes of goods and services among the 45 classes of the International Classification of Goods and Services (ICGS). You should choose classes that suit the IT sector: Class 9 (computer programs, applications) and Class 42 (programming services, platform as a service). Within one class, select the goods and services the company currently sells/provides and those planned for future sale/provision. Pay attention to Class 35, which, although not directly related to IT, includes important services an IT company may offer: technology consulting services, advertising, retail, and wholesale of Class 9 goods, and other services.

It is advisable to choose additional classes depending on the IT company’s specialization. These might include Class 36 (financial services), Class 38 (telecommunications services), etc. The brand will be protected only within the selected classes, and the protection will not extend to other classes and areas of activity.

After selecting classes, a similarity and identity search should be conducted. This search is not mandatory but helps identify potential registration risks and allows adjustments to make the brand more unique, increasing the chances of obtaining a certificate.

Examples of TMs in IT include “SIGMA SOFTWARE” in Classes 9 and 42, “SIGMA SOFTWARE” in Classes 9, 35, 36, 41, 42, and the international TM “LUXOFT” in Classes 35 and 42.

Registration features

TM registration is lengthy: 20-24 months in Ukraine, 6-9 months in the EU and the USA. In Ukraine, TM undergoes two main stages: formal examination, which checks the submitted documents for compliance with legal requirements, and substantive examination, which checks the word or logo for registrability. In the EU and the USA, applications only undergo formal examination and are then published for objections by other TM owners. After registration, it is advisable to monitor submitted applications to object to similar TMs’ registration and maintain brand distinctiveness for your consumers.

Conclusion

A registered TM provides numerous benefits for IT specialists, such as protecting the name or logo from copying, preventing unauthorized use of the brand online, and facilitating project funding. TMs in the IT sector are mainly registered in Classes 9, 35, and 42, with additional classes selected as needed. Although TM registration is a lengthy process, the various brand protection methods and the ability to counter violations afforded by a registered TM make it worth the wait.